Passionate about IP! Since June 2003 the IPKat has covered copyright, patent, trade mark, info-tech, privacy and confidentiality issues from a mainly UK and European perspective. The team is Neil J. Wilkof, Annsley Merelle Ward, Darren Smyth, Nicola Searle, Eleonora Rosati, David Brophy, Alberto Bellan and Merpel, with contributions from Mark Schweizer. You're welcome to read, post comments and participate. You can email the Kats here

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Friday, 15 June 2007

LexisNexis Butterworth picked up a good trade mark case yesterday from the Chancery Division of the High Court for England and Wales: Riemann & Co and another v Lino Care Ltd, a ruling by Mr Justice Briggs on an application for interim injunctive relief. Riemann made the P20 once-a-day sunscreen and held two P20 trade marks. Lino Care sold a sunscreen product called C20. Riemann sued for trade mark infringement (similar mark/same goods)and for passing off through the use of similar name and packaging. Seeking interim injunctive relief (Riemann maintained that, while it agreed that Lino Care had enough cash to pay damages if Riemann won its case, its loss of profits would be unquantifiable if no injunction were granted although, if the action failed, damage to Lino Care would be calculable. Riemann also argued that its reputation could damaged by consumer association of C20 with P20, if C20 turned out to be no good.

Briggs J granted the interim relief. There was, on the evidence, a risk of irreparable harm both to Riemann if no order were made and to Lino Care if it were. However, the potential harm suffered would be greater for Riemann. Thus the balance of irreparable harm marginally favoured the grant of relief rather than the withholding of relief.

The IPKat would love to know more about the balancing by the judge (who is not one of the IP 'regulars') of the irreperable harm that might be suffered by Lino Care as the alleged infringer. Was this confined merely to potential loss of sales, or did it also include potential loss of goodwill in the development of the C20 brand? If the latter is taken into consideration there will be many more factual situations in which a claimant will struggle to obtain interim relief unless the court then redresses the balance by looking beyond 'balance of convenience' towards the likelihood that a defendant will be able to establish that his sign does (or does not infringe). Merpel adds, I always assumed that numbers on sunblock products were an indication of how much sun they blocked ...

Flashing Badge Co Ltd v Groves (trading as Flashing Badges by Virgo and Virgo Distribution) [2007] EWHC 1372 (Ch) is a decision by Mr Justice Rimer in an interesting copyright/design spat. You can read the judgment in full here on BAILII. Flashing Badge (now, that name tells you all about the company) commissioned a freelance graphic designer to design some novelty badges that would be made as flashing badges, carrying messages such as 'Happy Birthday', 'Princess', 'Little Monster' and '16 Today'. Each badge was designed in such a way that its outline shape followed, and was dictated by, the outline of the artistic design that was its subject matter. The designer assigned the copyright in the designs to Flashing Badge. Virgo subsequently imported from China and offered for sale virtually identical copies of these badges, so Flashing Badge sued for copyright infringement and applied for summary judgment.

Virgo argued that, although the drawings on the face of the badges were artistic works, i.e. graphic works within under section 4 of the Copyright, Designs and Patents Act 1988, section 51 provided it with an exemption from liability in that the outline of the artistic work on which the badges were based was part of the configuration of the badge. Note: Section 51 says:

"(1) It is not an infringement of any copyright in a design document or model recording or embodying a design for anything other than an artistic work or a typeface to make an article to the design or to copy an article made to the design.

(2) Nor is it an infringement of the copyright to issue to the public, or include in a film or communicate to the public, anything the making of which was, by virtue of subsection (1), not an infringement of that copyright.

(3) In this section-“design” means the design of any aspect of the shape or configuration (whether internal or external) of the whole or part of an article, other than surface decoration; and “design document” means any record of a design, whether in the form of a drawing, a written description, a photograph, data stored in a computer or otherwise".

Granting summary judgment, Rimer J ruled against Virgo in respect of all but one of the badges. In his view

* Each drawing was a 'design document' within the meaning of section 51(3): they each incorporated a design for an artistic work and a design for something other than an artistic work, i.e. an article in the nature of a badge in the same outline shape as the artistic work.

* Section 51 had no relevance to claims in respect of the first element of the design, because that was a design for an artistic work. It was, however, relevant to the latter element of the design, because that was a design for something other than an artistic work: a badge whose shape followed the shape of the artistic work. As regards the latter, under section 51(3) the only 'design' in respect of which the defence could apply was a design for the shape or configuration of the whole or part of an article other than the surface decoration. It followed that the section 51(1) defence applied, if at all, only to a copyright claim in the design minus the surface decoration - but it offered no defence in respect of any infringement of the copyright in the graphic design which provided the surface decoration of the badges.

* The design of the shape of the badge followed the outline of the design for the artistic work on the face of each badge, but the latter design was in the nature of a graphic design which could not be said to exist only as part of the shape of the badge. It was a design which could be applied to any other substrate and which, if so applied, would enjoy copyright protection for the infringement of which section 51 would afford no defence.

This is one of those legal issues, the IPKat says, that is easier to understand when you see the disputed articles in front of you than when you try to find words to express the concepts. Merpel asks, but what happens when there is no clear distinction between the surface decoration and the shape, as may be the case where the design document is three-dimensional and the surface decoration is 'textured' into it rather than being flat artwork?

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